Monthly Archives: December 2012

The WordPress.com stats helper monkeys prepared a 2012 annual report for this blog. Here’s an excerpt: 600 people reached the top of Mt. Everest in 2012. This blog got about 1,900 views in 2012. If every person who reached the … Continue reading →

Timing: For most patent applications, a third-party prior art submission can now be filed before the first Office Action is mailed. In cases where the USPTO examines a patent application quickly, such submissions can be filed within six months of publication. The USPTO will not consider any submissions after the notice of allowance.

Effective Date: These submissions can be filed starting Sept. 16, 2012. The submissions may be filed in any pending application.

Requirements: These submissions may be done anonymously and can be submitted electronically. The submissions must include:

(1) a list identifying the items being submitted; (2) a concisedescription of the relevance of each item listed; (3) a legible copy of each non-U.S. patent document listed; (4) an English translation of any non-English language item listed; (5) a statement that the submission complies with the statutory provision; and (6) the required fee ($0 if fewer than three-documents submitted for a first submission, $180 otherwise). The submissions will be screened for these requirements and if not compliant, the submission will not be entered in the application. The third party is not required to serve the applicant with a copy of the submission.

Results: The examiner is required to consider compliant third-party submissions in preparation for the next Office Action. The documents in the submission will be listed on the face of the issued patent, if considered by the examiner.

Quality Art: The best submissions will contain on-point, relevant prior art. Examiners will likely not review submissions containing nonrelevant or cumulative prior art. So, unlike the typical practice of citing prior art in an Information Disclosure Statement, it is helpful to review the prior art and make a judgment call on the relevance before submitting it.

Be Concise: The explanation of the relevance of each item should contain only enough information to point the examiner to the pertinent disclosure in the prior art. Additional explanations will not only waste time and costs, but will most likely be ignored by the examiner.

Submit Electronically: The EFS-WEB system will be modified to allow submissions to be filed electronically. Indeed, the EFS-WEB system will be modified to contain a specific category under which these submissions must be submitted, else they will be deemed non compliant. In the event any submission is seemed non-compliant by the USPTO division created to screen them, the third party will be notified electronically if an email address is provided.

Limited Submissions: Each submission is limited to 10 items of prior art. Multiple submissions (each of up to 10 items) can be made, as long as a fee is paid for each submission. So cumulative prior art is best avoided for cost reasons. It also makes for a less concise submission.

Explaining Known Art: Rather than submitting new prior art, a third party may re-submit existing prior art of record in the file, along with an explanation of additional information in that prior art. In most instances, that additional information might explain a point of view not considered by the examiner. As well, this additional information might point to parts of the prior art not discussed in any rejection and reply.

Scope: The submission can be especially useful for limiting and defining the scope of the claims. If properly presented, the submission can explain the prior art in such a manner that regardless of whether that prior art reference is relied on by the examiner, the disclosure in the prior art can be used when construing the claims.

Other Questions of Patentability: The submission can include any published document relevant to the examination of the application. In other words, the submission need not be restricted to merely issues of novelty and obviousness. Accordingly, if a published document (which would arguably include a court decision) has bearing on issues that can be raised under 35 U.S.C. § 101 or 35 U.S.C. § 112, it can — and should be — submitted to bring such issues to the attention of the examiner.

Applicant Submissions: If third-party submissions containing prior art are deemed non-compliant, they are not supposed to be entered into the record. But if an applicant is somehow made aware of non-compliant submissions, that applicant should submit that prior art via an Information Disclosure Statement to avoid any claim of inequitable conduct during litigation.

Competitive Monitoring: These third-party prior art submissions will require increased monitoring programs of competitors’ published applications so that they can be submitted timely and effectively. So factor the additional resources needed for this competitive monitoring into your management programs.

Today marks three months since some of the key new mechanisms of the AIA went into effect. A good opportunity to report on the uptake for two sections — submissions to the PTAB, and third party prior art submissions. Given the critical mandate of the AIA to empower our stakeholder community to play an active role in assisting the USPTO in its ongoing commitment to patent quality, initial usage of the applicable new provisions is worth reporting, to say the least.

To put the lead first, we’re encouraged by the third party submissions and PTAB filings we’re seeing under the new rules, to date.

We’ve received 88 PTAB submissions, 73 for inter partes reviews and 15 for covered business method reviews. We’re on our way for meeting our FY 13 expectations, and our PTAB Chief Judge James Smith puts it well when he says “momentum is building.”

We’ve received 270 prior-art submissions from third parties, also in line with expectations. The leading art group receiving submissions? TC 3700, which includes many software-related inventions such as those found in electronic gaming devices and medical equipment. And when looking at the spread of submissions as a whole, it’s important to note that there are not a lot of classifications untouched. With many technologies being represented, as opposed to just one or two, we’re seeing that the AIA is indeed supporting the patent system broadly.

So what do we learn from these numbers? First, they demonstrate that the public finds valuable the new ways to interact with the USPTO. Second, they will contribute quickly to improved patent quality. With the PTAB proceedings, we will see valid patents upheld while addressing those that may require correction. With prior art submissions, examiners will be able to consider public submissions and ensure high quality work during the review process.

We’ll continue to monitor PTAB and prior-art submissions. The numbers suggest we’ve got some great new tools at our collective disposal.

Are submissions truly limited to “prior art” as the title of your blog entry suggests? I thought any information of potential relevance to patentability could be submitted. Do any of the third-party submissions thus filed include information that is not prior art?Posted by Pat Rules on December 17, 2012 at 09:38 PM EST #

I am aware of at least one submission in which a non-prior art reference (Wikipedia article) was found acceptable for a third party prior art submission. However, that may have been an error. Moreover, users should be aware at least regarding third party prior art submissions that “concise statements” had better not be too concise or the entire submission will be denied entry of record. The concise statement for each submitted reference should expressly identify at least one claim and at least one specific element or step of the claim to which the reference is asserted to relevant. The clerk responsible for initially reviewing the submission for acceptibility will not refer to the application claims. Even those references whose relevance to the claims may be apparent on their face to anyone who has read the claims, can be deemed to have failed to comply with the concise statement requirement and the entire submission, including other prior art references, most clearly relevant and properly supported by the concise statement, will be ignored. There is a qualitative requirement to the statements that is NOT disclosed in the PTO filing instructions or the rules themselves.Posted by John Jamieson on December 18, 2012 at 03:20 PM EST